Notice by the Supreme People's Court of Issuing the Twenty-Second Group of Guiding Cases

最高人民法院关于发布第22批指导性案例的通知

(No. 293 [2019] of the Supreme People's Court)

（法〔2019〕293号）

The higher people's courts of all provinces, autonomous regions, and municipalities directly under the Central Government; the Military Court of the People's Liberation Army; and the Production and Construction Corps Branch of the Higher People's Court of Xinjiang Uygur Autonomous Region:

各省、自治区、直辖市高级人民法院，解放军军事法院，新疆维吾尔自治区高级人民法院生产建设兵团分院：

Upon deliberation and decision of the Judicial Committee of the Supreme People's Court, four cases (Guiding Cases No. 113-116) including Michael Jeffrey Jordan v. TRAB of the State Administration for Industry and Commerce and Qiaodan Sports Co., Ltd. (administrative dispute over a trademark) are hereby issued as the twenty-second group of guiding cases for reference in trial of similar cases.

Michael Jeffrey Jordan v. Trademark Review and Adjudication Board of the State Administration for Industry and Commerce and Qiaodan Sports Co., Ltd. (Administrative dispute over a trademark)

迈克尔·杰弗里·乔丹与国家工商行政管理总局商标评审委员会、乔丹体育股份有限公司“乔丹”商标争议行政纠纷案

(Issued on December 24, 2019 as deliberated and adopted by the Judicial Committee of the Supreme People's Court)

（最高人民法院审判委员会讨论通过 2019年12月24日发布）

Keywords: administrative, trademark dispute, name right, good faith

关键词 行政/商标争议/姓名权/诚实信用

Key Points of Judgment

裁判要点

1. The name right is a personal right enjoyed by a natural person to the name and such right may constitute a “prior right” under the Trademark Law. Where the Chinese translation of the name of a foreign natural person meets the prescribed conditions, the foreign natural person may claim protection of the Chinese translated name as a specific name in accordance with the relevant provisions on the name right.

2. Where a foreign natural person claims name right protection in a specific name, such specific name should meet the following three conditions: (a) the specific name has a certain level of popularity in China and is a name known to the relevant public; (b) the relevant public uses the specific name to refer to the natural person; and (c) a stable connection has been established between the natural person and the specific name.

3. “Use” of the name is one of rights enjoyed by the name right holder and it is not a legal precondition for the name right holder to claim protection of the name right. A specific name is protected under law based on the name right. Even though a natural person does not actively use such specific name, it does not affect the name right holder's claim of right in accordance with the provisions of the Trademark Law on “prior rights.”

4. Where the “trademark holder” that violates the principle of good faith, maliciously applies for trademark registration, and infringes “existing prior rights” of others claims that the registered trademark is legal and valid on the ground that its efforts in promoting, using, winning awards, and protecting the trademark have formed “market order” or “commercial success,” the people's court should not uphold such claim.

In the case of administrative dispute over a trademark between Michael Jeffrey Jordan (hereinafter referred to as “Michael Jordan”) and respondents Trademark Review and Adjudication Board of the State Administration for Industry and Commerce (hereinafter referred to as the “TRAB”) and the third party in the trial of first instance Qiaodan Sports Co., Ltd. (hereinafter referred to as “Qiaodan Company”), the trademark invovled, “Qiaodan” (No. 6020569) of Qiaodan Company, was approved for use for sports equipment, swimming pools (for recreation), roller skates, Christmas tree decorations (excluding lighting and sweets) under class 28 of the International Classification of Goods and Services for the Purposes of the Registration of Marks (hereinafter referred to as the “Nice Classification”). The petitioner for retrial alleged that the trademark invovled contained the Chinese translation “Qiaodan” of his name, which fell under the circumstance provided in Article 31 of the Trademark Law of the People's Republic of China (2001 Amendment) (hereinafter referred to as the “Trademark Law”) that “no applicant for trademark registration may infringe another person's existing prior rights.” Therefore, he filed a petition with the TRAB for declaring the disputed trademark invalid.

The TRAB held that the trademark involved “Qiaodan” is different from “Michael Jordan” and the Chinese translation “迈克尔·乔丹.” Besides, “Jordan” is a common surname in the UK and the United States and it is hard to affirm the relevance between such surname and Michael Jordan. Therefore, it entered a ruling to maintain the trademark invovled. The petitioner for retrial refused to accept the ruling and filed an administrative lawsuit with the First Intermediate People's Court of Beijing Municipality.

On April 1, 2015, the First Intermediate People's Court of Beijing Municipality entered an administrative judgment (No. 9163 [2014], First, Administrative Division, Intellectual Property, First IPC, Beijing) to dismiss claims of Michael Jordan. Michael Jordan refused to accept the aforesaid judgment of first instance and appealed. On August 17, 2015, the Higher People's Court of Beijing Municipality entered an administrative judgment (No. 1915 [2015], Final, Administrative Division, Intellectual Property, HPC, Beijing) to dismiss Michael Jordan's appeal and affirm the original judgment. Michael Jordan still refused to accept the aforesaid judgment of second instance and filed a petition for retrial with the Supreme People's Court. After reviewing the case, on December 7, 2016, the Supreme People's Court entered an administrative judgment (No. 27 [2016], Retrial, Administrative Division, SPC) that (a) the administrative judgment (No. 9163 [2014], First, Administrative Division, Intellectual Property, First IPC, Beijing) as entered by the First Intermediate People's Court of Beijing Municipality should be set aside; (b) the administrative judgment (No. 1915 [2015], Final, Administrative Division, Intellectual Property, HPC, Beijing) as entered by the Higher People's Court of Beijing Municipality should be set aside; (c) the ruling on dispute over the trademark “Qiaodan” (No. 6020569) (No. 052058 [2014], Trademark Review and Adjudication, TRAB) entered by the TRAB should be set aside; and (d) the TRAB should enter a new ruling on the trademark “Qiaodan” (No. 6020569).

The Supreme People's Court held that the issues of this case were whether the registration of the disputed trademark infringed the name right of the petitioner for retrial in “Qiaodan” and violated the provisions of Article 31 of the Trademark Law (2001 Amendment) that “an application for the registration of a trademark may not infringe others' existing prior rights.” In the judgment, the Supreme People's Court mainly affirmed the following:

I. Legal basis on which the petitioner for retrial claimed the name right protection

一、关于再审申请人主张保护姓名权的法律依据

Article 31 of the Trademark Law provides that “no application for the registration of a trademark may infringe the existing prior rights of others.” The prior rights that have been specially provided in the Trademark Law should be protected in accordance with the special provisions of the Trademark Law. Civil rights or interests that are not specified in the Trademark Law, but which were legally accorded to civil entities prior to the application date of the disputed trademark, should be protected in accordance with the provisions of the General Principles of the Civil Law, the Tort Law, and other relevant laws. Such general provisions should generally apply to such civil rights and interests. Article 99 (1) of the General Principles of the Civil Law and Article 2 (2) of the Tort Law clearly provide that a natural person legally enjoys the name right. Therefore, the name right may constitute a “prior right” as provided in Article 31 of the Trademark Law. Where the registration of the disputed trademark infringes the prior name right of another person, it should be deemed to have violated the provisions of Article 31 of the Trademark Law.

A name is used to refer to, address, or distinguish a specific natural person and the name right is an important personal right enjoyed by a natural person in his name. With the continuous development of China's socialist market economy, it has become increasingly common for natural persons with a certain level of popularity to commercialize their names, obtain economic benefits under contracts to endorse specific goods or services. In the protection of others' prior name rights by applying the provisions of Article 31 of the Trademark Law, it protects not only the personal dignity of the natural person, but also the economic interests of the natural person in their name, especially the name of a celebrity. The registration of a trademark with a name whose prior right is enjoyed by another person without permission may easily mislead the relevant public to believe that the goods or services bearing the trademark have specific connections with the natural person, such as the person's endorsement or authorization. The registration of such trademark should be deemed to have infringed the person's prior name right and have violated the provisions of Article 31 of the Trademark Law.

First, the specific name should have a certain level of popularity and be known to the relevant public, and the relevant public must use the specific name to refer to the natural person. Article 6 (2) of the Interpretation of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Civil Cases Involving Unfair Competition defines as unfair competition those acts that “use the name of another person without permission and mislead the relevant public.” Such act is an act of infringement upon others' name right in nature. Such act is closely related to the registration of the disputed trademark that is likely to mislead the relevant public into believing that there are such specific relations as endorsement and authorization. Therefore, the provisions of the aforesaid judicial interpretation may apply in this case, mutatis mutandis, for establishing conditions under which a natural person's name right should be protected.

Second, a stable connection must have been established between the specific name and the natural person. In resolving the conflict involved between the prior name right and the registered trademark right, the standard of protection for the prior name right should be reasonably determined to balance the interests of the holder of the prior name right and the interests of the trademark holder. On the one hand, registration of the disputed trademark should not be deemed to infringe the name right of a natural person just because the disputed trademark uses or incorporates that person's name if it is known only to a limited circle of people or if it is used only occasionally. On the other hand, rigorous standards should not be imposed on a natural person asserting such a right, as was the case when the TRAB held that there must be one and only one connection between the name and a natural person for that natural person to claim name right protection. When the specific name claimed by a natural person has established a stable connection with the natural person, even though the relation between the person and the name is not “unique,” the name right of the natural person may also be protected according to the law. To conclude, where a natural person claims protection of a specific name by applying the provision of Article 31 of the Trademark Law that “no application for trademark registration may infringe the existing prior rights of others,” they must meet the following three conditions: (a) the specific name must have a certain level of popularity in China and be known to the relevant public; (b) the relevant public must use the specific name to refer to the natural person; and (c) a stable connection must have been established between the specific name and the natural person.

When judging whether a foreigner can claim protection of the Chinese translation of his name, it is necessary to consider the relevant public's common use of such name in China. If the translated name meets the aforesaid three conditions, it may be granted protection according to the law. The existing evidence in this case is sufficient to prove that “Qiaodan” has high popularity in China, is known to the relevant public, the relevant public in China usually refers to the petitioner for retrial as “Qiaodan,” and a stable connection has been established between “Qiaodan” and the petitioner for retrial. Therefore, the petitioner for retrial can claim a name right of “Qiaodan.”

III. Whether the petitioner for retrial and Nike Company (as authorized by the petitioner for retrial) actively used “Qiaodan” and what was the impact of that use on the name right claimed by the petitioner for retrial in this case

三、关于再审申请人及其授权的耐克公司是否主动使用“乔丹”，其是否主动使用的事实对于再审申请人在本案中主张的姓名权有何影响

First, in accordance with the provisions of Article 99 (1) of the General Principles of the Civil Law of the People's Republic of China, “use” is one of rights enjoyed by the holder of name right rather than an obligation the holder should undertake, and it is by no means a legal precondition imposed upon the holder of name right when applying to prohibit “interference with, usurpation of, and false representation of the name” or to assert protection of the name.．．．．．．

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